Clinic business

Jonathan D’Silva new director of Penn State Law’s Intellectual Property Clinic

UNIVERSITY PARK, Pennsylvania – Jonathan D’Silva joined Penn State Law at University Park as an assistant clinical professor of law and director of the intellectual property clinic at Happy Valley LaunchBox. As Principal, he will lead students working at the IP Clinic to help them gain hands-on experience of working in a small law firm and the responsibility of having a client.

“The IP Clinic is a vital part of Penn State’s LaunchBox & Innovation Network that provides a wide range of free resources needed by entrepreneurs and innovators,” said retired Vice Admiral James W. Houck, acting dean of Penn State Law and the School of International Affairs. “We welcome Jon as the new Clinic Director to guide students through our extensive experiential learning program.”

D’Silva’s experience in intellectual property law covers a variety of areas. He founded his own intellectual property law firm called MMI Intellectual Property in Erie, and serves as intellectual property counsel for multinational corporations, universities, and a number of small businesses. He understands the ins and outs of serving all types of clients while managing employees and the day-to-day responsibilities of running a business, which gives him a unique perspective as a clinic manager.

“I’m CEO, janitor and everything else,” he said. “My goal is to teach students the experience of running a practice. I didn’t have that working at a big law firm – they don’t teach you how to run a business. This includes payroll, the insurance you need, paying bills on time, and how to manage that side of the business. It is important that the people who are going to practice their profession understand what it is to run a business.

Michele Vollmer, Associate Dean of Clinics and Experiential Learning, Director of the Veterans and Military Legal Clinic and Clinical Professor of Law, said: “We are fortunate to have recruited Jon as a professor. clinic at Penn State Law. When Jon shares his vast experience with our law students, they have a great opportunity to learn from him as an individual mentor in a small setting while representing a myriad of clients.

D’Silva’s passion for patent law drives him to find the best way for his clients to move forward and help them realize the implications of their inventions, he said. Since the patent route can be difficult and expensive, it may make more sense for a client to instead consider trade secrets or copyrights to protect the invention. If a client chooses to go with the patent, D’Silva explained that it is his responsibility to conduct a broader review of the client’s invention as a solution to a problem. He will likely find a wider range of situations where the invention may be applicable than the inventor originally thought.

“It’s my job to make the patent worthwhile,” D’Silva said. “It means showing the inventor that what he has found isn’t just a gadget – it’s a solution. The widget is an embodiment of that solution and then we write a patent application that covers all the types of widgets that embody this solution.”

Tom Sharbaugh, Professor of Practice and Director of Penn State Law’s Entrepreneur Assistance Clinic, said, “Jon will be an excellent leader for the IP Clinic. There aren’t many intellectual property attorneys in Pennsylvania except in major metropolitan areas, and with the addition of Jon, the IP Clinic will now be able to help start-up and start-up entrepreneurs from around the world. State – free of charge – to protect their inventions and novelties. »

D’Silva said he looks forward to working with the clinic’s students and learning more about management and working with clients.

“It will be my first formal interaction with the students. It’s a different challenge. I hope to show them what the practice will be like and give them that experience,” he said. a law firm We have clients who have patents, trademarks, copyrights, licenses and contracts that we need to deal with.

He said he also sees the clinic as an opportunity to educate more students about their legal options. To work with patents, the individual must have an engineering or science degree and a law degree – a fact D’Silva learned on his own after completing his master’s degree in bioengineering at Cornell University. “Recruitment is important. There is a shortage of patent lawyers around the world because people don’t tell engineers they can become lawyers,” he said.

D’Silva intends to continue to facilitate business connections across the state to educate more people about the clinic as a valuable resource for entrepreneurs.

“One of my responsibilities is to connect the Penn State LaunchBoxes to the clinic and also to the economic development of Pennsylvania as a whole,” he said.

He has already started this business to some extent, as he has referred clients from his own law firm to the clinic. “I sent people to the clinic because practicing IP can be very expensive,” he said. “The product development process is also very expensive.”

One of the latest ideas he said he wants to convey to students working in the clinic is what they bring to their client and what it means to people to have the clinic as a means to achieve their goals.

“Penn State has a lot of resources for start-ups and development that have huge impacts on people’s lives, but it takes a lot of hard work and effort, and it’s just one step,” said said D’Silva. “What students allow them to take this step.

When the students complete their time at the IP Clinic, D’Silva said, “I hope they will be more confident in their ability to embark on any future tasks they take on, especially in their dealings with customers and with their ability to communicate their knowledge and navigate unfamiliar systems. Lots of lawyers who don’t go to clinics [in law school] never get the chance to work with clients until they graduate. Getting a taste of what their practice might look like is an invaluable opportunity.

The Intellectual Property Clinic gives Penn State law students the opportunity to develop practical skills by working in an environment similar to a small law firm and serving real clients. Their responsibilities resemble those of practicing intellectual property attorneys, which include greeting and servicing clients, researching intellectual property, filing applications with the U.S. Patent and Trademark Office, and more. Under the guidance of the Clinic Director, students gain realistic experience in the practice of intellectual property law.